PATENT PURCHASE
AGREEMENT
This PATENT
PURCHASE AGREEMENT (this “ Agreement ”)
is entered into, as of September 22, 2009, by and between
Vulcan Ventures Inc., a Washington corporation, with an address at
505 Fifth Ave. South, Suite 900, Seattle, WA 98104 (“
Seller ”) and ARRIS Group, Inc., a Delaware
corporation, with an address at 3871 Lakefield Drive, Suwanee,
Georgia 30024 (“ Purchaser ”). The
parties hereby agree as follows:
1.1 Seller owns
certain patent applications, patents, and/or related foreign
patents and applications which it purchased from Digeo, Inc.
(“ Digeo ”), pursuant to that certain
Patent Purchase Agreement dated December 18, 2008.
1.2 Digeo and
Purchaser have entered into that certain Asset Purchase Agreement,
dated as of September 22, 2009 (the “ Asset
Purchase Agreement ”), which is conditioned upon
Seller agreeing to sell and assign such patents and applications to
Purchaser.
1.3 In
connection with the Asset Purchase Agreement, Seller wishes to sell
to Purchaser, and Purchaser wishes to acquire, all right, title,
and interest in such patents and applications.
“
Assigned Patent Rights ” means all patent applications and patents owned
by Seller listed on Exhibit A .
“
Assignment Agreements ” means the agreements assigning ownership of the
Assigned Patent Rights from the inventors and/or prior owners to
Seller.
“
Docket ” means Seller’s or its agents’ list
or other means of tracking information relating to the prosecution
or maintenance of the Assigned Patent Rights throughout the world,
including, without limitation, the names, addresses, email
addresses, and phone numbers of prosecution counsel and agents, and
information relating to deadlines, payments, and
filings.
“
Effective Date ” means the Closing Date (as defined in the Asset
Purchase Agreement).
“
Executed Assignment(s) ” means the executed and notarized Assignment of
Patent Rights in the form of Exhibit B ,
each as signed by a duly authorized representative of Seller and
the additional documents Seller may be required to execute and
deliver under paragraph 5.3.
“
Prosecution History Files ” means all files, documents and tangible things,
as those terms have been interpreted pursuant to rules and laws
governing the production of documents and things, constituting,
comprising or relating to the investigation, evaluation,
preparation, prosecution,
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maintenance,
defense, filing, issuance, registration, assertion or enforcement
of the Assigned Patent Rights.
“
Transmitted Copy ” has the meaning set forth in paragraph
8.11.
3.
Payment. Purchaser will
pay to Seller the amounts pursuant to the Payment Schedule,
attached hereto as Exhibit C (the “
Patent Purchase Price ”). Seller will furnish
Purchaser with all necessary information to make a wire transfer to
a designated bank account of Seller.
4. Transfer
of Assigned Patent Rights
4.1
Assignment of Assigned Patent Rights . Seller shall sell,
assign, transfer, and convey to Purchaser all right, title, and
interest in and to the Assigned Patent Rights on the Effective
Date. Seller understands and acknowledges that, if any of the
Assigned Patent Rights are assigned to Seller’s affiliates,
Seller may be required to perform certain actions to establish that
Seller is the assignee and to record such assignments. Upon
execution of the Agreement or reasonably promptly thereafter,
Seller will execute and deliver to Purchaser the Assignment of
Patent Rights in the form set forth in Exhibit B
.
5.
Additional Obligations
5.1 Further
Cooperation .
(a) At the
reasonable request of Purchaser, Seller will execute and use
commercially reasonable efforts to deliver such other instruments
and to do and perform such other acts and things as may be
necessary or desirable for effecting completely the consummation of
the transactions contemplated hereby, including, without
limitation, execution, acknowledgment, and recordation of other
such papers, and using commercially reasonable efforts to obtain
the same from the respective inventors, as necessary or desirable
for fully perfecting and conveying unto Purchaser the benefit of
the transactions contemplated hereby. Purchaser will reimburse
Seller for its reasonable out-of-pocket expenses in complying with
this subparagraph 5.1(a), provided that such reimbursement will be
subject to Seller’s first obtaining Purchaser’s consent
to such amounts (other than nominal amounts), such consent not to
be unreasonably withheld.
(b) To the
extent any attorney-client privilege or the attorney work-product
doctrine applies to any portion of the Prosecution History Files
under Seller’s or Seller’s representatives’
normal document retention policy (if any), Seller will ensure that,
if any such portion of the Prosecution History File remains under
Seller’s possession or control, it is not disclosed to any
third party unless (i) disclosure is ordered by a court of
competent jurisdiction, after all appropriate appeals to prevent
disclosure have been exhausted, and (ii) Seller gave Purchaser
prompt notice upon learning that any third party sought or intended
to seek a court order requiring the disclosure of any such portion
of the Prosecution History File.
(c) Seller
will, at the reasonable request of Purchaser, assist Purchaser in
providing, and obtaining, from the respective inventors, the prompt
production of pertinent facts and documents, the giving of
testimony, the execution of petitions, oaths, powers of attorney,
specifications,
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declarations or
other papers and such other assistance reasonably necessary for
Purchaser’s filing and prosecuting patent applications,
enforcement or other actions and proceedings with respect to the
claims under the Assigned Patent Rights. Purchaser shall compensate
Seller for any reasonable, documented disbursements and time
incurred in connection with providing assistance under this
subparagraph 5.1(c) in connection with any enforcement or other
infringement action regarding the Assigned Patent Rights, under a
standard billable hour rate of Seller; provided that Seller shall
have furnished Purchaser an advance, written estimate of the fees
and costs for such assistance and Purchaser shall have agreed in
writing to pay such fees and costs.
5.2 Power of
Attorney . Seller hereby gives Purchaser power-of-attorney to
execute documents in the name of Seller in order to effectuate the
recordation of the transfers of any portion of the Assigned Patent
Rights in a governmental filing office in the world.
5.3 Foreign
Assignments . To the extent the Assigned Patent Rights include
non-United States patents and patent applications, Seller will
promptly use commercially reasonable efforts to deliver to
Purchaser’s representatives executed documents in the forms
requested by Purchaser in order to perfect the assignment to
Purchaser in the non-U.S. jurisdictions of the non-U.S. patents and
patent applications. Purchaser will reimburse Seller for its
reasonable out-of-pocket expenses in complying with this
Section 5.3, provided that such reimbursement will be subject
to Seller’s first obtaining Purchaser’s consent to such
amounts (other than nominal amounts), such consent not to be
unreasonably withheld.
5.4 Fees
. The parties acknowledge that, from time to time, Seller has
received invoices for maintenance fees, annuities, and the like for
the Assigned Patent Rights. Seller agrees to pay all such fees due
as of the Effective Date. Although certain of such fees may be due
or outstanding as of or after the Effective Date of this Agreement,
Seller is not aware of (a) any material amounts for such fees
that are outstanding as of the Effective Date and/or (b) any
failure of Seller to pay any such amounts that has resulted in any
material prejudice to the Assigned Patent Rights. On the Effective
Date, Seller agrees to provide Purchaser with a list of all
Assigned Patent Rights that have maintenance fees, annuities, and
the like due within ninety (90) days of the Effective
Date.
5.5
Docket . Seller will, as reasonably requested by Purchaser,
cooperate and provide current Docket information to effect a smooth
transfer of the Assigned Patent Rights to Purchaser. Purchaser will
reimburse Seller for its reasonable out-of-pocket expenses in
complying with this Section 5.5, provided that such
reimbursement will be subject to Seller’s first obtaining
Purchaser’s consent to such amounts (other than nominal
amounts), such consent not to be unreasonably withheld.
5.6 No
Contest . Seller shall not take an action or cooperate with any
third party in any effort to challenge the validity or
enforceability (or narrow the claims construction) of any of the
Assigned Patent Rights, except in response to a claim or assertion
by Purchaser (and/or any successor or permitted assign) against
Seller of infringement of any of the Assigned Patent
Rights.
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6.
Representations and Warranties of Seller
Seller hereby
represents and warrants to Purchaser each of the following as of
the Effective Date (all of the following only to the best of
Seller’s knowledge, without investigation, as of the
Effective Date):
6.1
Authority . Seller is a company duly formed, validly
existing, and in good standing under the laws of the State of
Washington. Seller has the full power and authority and has
obtained or promptly will obtain all third party consents,
approvals, and/or other authorizations required to enter into this
Agreement and to carry out its obligations hereunder, including,
without limitation, the assignment of the Assigned Patent Rights to
Purchaser.
6.2 Title
and Contest . Seller owns all right, title, and interest to the
Assigned Patent Rights, including, without limitation, all right,
title, and interest to sue for infringement of the Assigned Patent
Rights. Seller has obtained and properly recorded previously
executed assignments for the Assigned Patent Rights as necessary to
fully perfect its rights and title therein in accordance with
governing law and regulations in each respective
jurisdictio
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